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ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS (IPR)
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1. INTRODUCTION TO IPR ENFORCEMENT IN BRUNEI - IPR enforcement is mainly done by the Royal Brunei Police Force and the Royal Customs and Excise.
- Although prosecution will be done by the Deputy Public Prosecutor of the Attorney General’s Chambers.
2. CIVIL IPR ENFORCEMENT
2.1 Competent Courts - The Intermediate Court also has the power to hear any IPR matters on either civil or criminal offences subject to sections 13 and 14 of the Intermediate Courts Act Cap 162.
- The High Court also has powers to listen to any civil and criminal IPR matters subject to sections 16 and 17 of the Supreme Court Cap 5.
2.1.1 First instance - The Magistrate Court will first hear any matters pertaining to IPR offences.
- However, if the penalty for such offences are above B$5000 or imprisonment of more than 3 years, or more than B$10,000 or imprisonment of more than 7 years (subject to the notification made by the Chief Justice) then the case will be heard at the Intermediate Court or the High Court as first instance.
2.1.2 Appeal
· Court of Appeal
On criminal IPR matters, it will only hear appeals from:
a. the High Court (section 19 of the Supreme Court Cap 5); and
b. the Intermediate Court (section 27 of the Intermediate Court Cap 162).
On civil IPR matters, the Court of Appeal will hear appeals from:
a. judgment or order of the High Court and any other jurisdictions as may be conferred upon it by the Supreme Court Act or any other written law (section 18 of the Supreme Court Act).
b. the Intermediate Court (section 26 of the Intermediate Courts Act Cap 162).
· High Court
- Hear Trade mark appeals from any decision of the Registrar (section 70 of the Trade Marks Act Cap 98)
- Hear civil and criminal appeals from the Magistrates Court (section 18 of the Subordinate Court Act Cap 6).
· ‘in Chambers’ and Registrars but only on Industrial Design where
a) any appeal which concerns an application for registration of an industrial design shall be heard in Chambers unless the court otherwise directs (section 58(2) of the Industrial Design Order).
b) in any appeal, the registrar shall be entitled to appear and be heard and if so directed by the Court (section 58(3) of the Industrial Design Order).
2.2 Remedies available (compensation, injunctions - preliminary and final)
· Trade Marks (under the Trade Marks Act Cap 98)
a) Delivery Up
- under section 18
- However not available after the end of the period of 6 years from (under section 20):
i. With respect to infringing goods, the date on which the trade mark was applied to goods or their packaging.
ii. With respect to infringing material, the date on which the trade mark was applied to the material.
iii. With respect to infringing articles, the date on which the articles were made.
b) Injunctive Relief (under section 58 and section 59).
c) Order of Disposal of infringing goods (under section 21)
d) Damages (under section 16)
e) Account of Profit (under section 16)
· Copyright (under the Copyright Order)
a) Injunctions (section 99)
b) Account of Profit (section 99)
c) Damages (section 100)
d) Order for Delivery Up (section 101)
e) Rights to seize infringing copies (section 102)
· Layout Design (under the Layout Design Order)
a) Damages (section 23(1)(a))
b) Account of Profit (section 23(1)(b))
c) Order for Delivery Up (section 23(1)(c))
d) Forfeiture (section 23(1)(d))
· Industrial Design (under the Industrial Design Order)
a) Damages (section 48)
b) Injunctions (section 48)
c) Account of Profit (section 48)
d) Order for Delivery Up (section 53)
e) Order for Disposal (section 54)
· Patent (under the Inventions Act Cap 72)
- Certificate of Registration will be revoked (section 12)
2.3 Execution of Court Orders
2.3.1 Local Court Orders
· See 2.1
2.3.2 Overseas Court Orders
· Section 3 of the Reciprocal Enforcement of Foreign Judgments Act Cap 77 held that the Attorney-General, if he is satisfied that substantial reciprocity of treatment will be assured as respects the enforcement in a foreign country of judgment given in the High Court of Brunei Darussalam, may by order published in the Gazette direct that this Act (Reciprocal Enforcement of Foreign Judgments Act Cap 77) shall extend to that foreign country; and that such courts of that foreign country as are specified in the Act shall be deemed superior courts of that country for the purposes of this Act (Reciprocal Enforcement of Foreign Judgments Act Cap 77).
· Any judgment of a superior court of a foreign country to which the Reciprocal Enforcement of Foreign Judgments Act Cap 77 extends, other than a judgment of such a court given on appeal from a court which is not a superior court, shall be a judgment to which the Reciprocal Enforcement of Foreign Judgments Act Cap 77 applies if –
(a) it is final and conclusive as between the parties thereto; and
(b) there is payable thereunder a sum of money, not being a sum payable in respect of taxes or other charges of a like nature or in respect of a fine or other penalty; and
(c) it is given after the coming into operation of the order directing that this Act shall extend to that foreign country.
3. CRIMINAL IPR ENFORCEMENT
3.1 Police Authorities (commercial, market, economic police etc.)
· The Royal Brunei Police Force has one special unit which deals with criminal offences on Intellectual Property Rights.
· This Unit is called the Commercial Crime Unit.
3.2 Competent courts and jurisdiction (including appeal)
· See 2.1
3.3 Penalties
· Trade Mark - Criminal offences are dealt under sections 94 – 103 of the Trade Marks Act whereby the penalty is a fine and imprisonment.
- Goods will be forfeited upon applying through the Court.
· Copyright - Criminal offences are dealt under sections 203 – 212 of the Copyright Order whereby the penalty is a fine and imprisonment.
· Layout Design - No criminal penalties are provided.
· Industrial Design - Criminal offences are dealt under sections 79 - 83 of the Industrial Designs Order whereby the penalty is a fine and imprisonment.
· Patent - No criminal penalties are provided.
4. BORDER CONTROL
4.1 Registration Procedure
· Under section 109(1) of the Copyright Order, the copyright owner in a published literary, dramatic or musical work may give notice in writing to the Controller of Customs:
(a) claiming that he is the owner of the copyright in the work; and
(b) requesting the customs, for the period specified in the notice (i.e. not exceed five years and shall not extend beyond the period for which copyright subsists), to treat as prohibited goods printed copies of the work which are infringing copies for the purposes of the Copyright Order that are or at any time come under customs control.
· Under section 109(2) of the Copyright Order, the copyright owner in a sound recording or film may give notice in writing to the Customs:
(a) claiming that he is the owner of the copyright in the work;
(b) claiming that infringing copies of the work are expected to arrive in Brunei Darussalam at the time and place specified in the notice; and
(c) requesting the customs to treat as prohibited goods the infringing copies that come under customs control.
4.2 Registration Authority
· Royal Customs and Excise
4.3 Relevant Courts
· See 2.1
4.4 Remedies (Injunction)
· See 2.2
5. ADMINISTRATIVE IPR ENFORCEMENT
5.1 Role of patent office (If any)
The role of the Patent Office (which is the Registry of Trademarks, Patent and Industrial Designs of the Registry Division, Attorney General’s Chambers) is to accept only re-registration of a patent inn the United Kingdom, Malaysia and Singapore.
5.2 Relevant courts
· See 2.1
6. COMMENTS
The Copyright Order is undergoing some amendments especially on the penalties for Criminal offences.
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